Appeal No. 94-3737
Application 07/796,932
rejected under 35 U.S.C. § 103 as being unpatentable over
Shipton.
Upon careful consideration of the opposing arguments
presented on appeal, we will not sustain the examiner’s
rejections for essentially those reasons expressed by appellant.
We consider first the examiner’s rejection of the appealed
claims under 35 U.S.C. § 112, first paragraph, as being based
upon an objectionable specification. The examiner finds
confusion “as to when ‘elemental carbon’ intends to be ‘graphite’
versus ‘carbon atoms’” (page 4 of Answer). However, page 5 of
the specification, lines 8-11, defines non-diamondaceous
elemental carbon as amorphous carbon or graphite, whereas the
nascent carbon atoms described at page 8 of specification, line
7, are those “carbon atoms” that are formed into diamond by
appellant’s process.
Regarding the examiner’s objection that the specification
does not give “examples of materials which can be used at 800EC
or less,” appellant correctly points out that not all embodiments
of a disclosed invention need be exemplified to satisfy § 112,
first paragraph.
We do not understand the examiner’s objection that “Example
1 does not illustrate the invention as originally filed since it
is at 1200EC not below it” (page 4 of Answer). As noted by
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